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October 16, 2017

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What Trademark Covers

Trademark law applies to the use of words, phrases, symbols, slogans
and other "marks" to identify the source or sponsorship of goods or
services. The Lanham Act,
which is the federal statute that covers trademark law, makes it
unlawful for you to use a trademark in a manner that confuses consumers
about the source or sponsorship of goods or services. Creating this
kind of consumer confusion is called trademark infringement.
Trademark law's primary purpose is to protect consumers from confusion
in making purchasing decisions, and it does not protect against
confusion generally. If you use a trademark in a way that does not
create consumer confusion, you cannot be held liable for trademark
infringement.

But, in 1996, Congress expanded federal trademark law so that
it now covers some uses of trademarks that do not create consumer
confusion. The federal dilution statute, found at 15 U.S.C. § 1125(c), gives the owner of a "famous" trademark the ability to bring a federal lawsuit against someone for trademark dilution.
Trademark dilution occurs when someone other than the rightful owner of
a famous mark uses it in a manner that diminishes its power to identify
the trademark owner's goods or services regardless of consumer confusion about source or sponsorship.
The dilution statute does not apply to noncommercial uses of a famous
trademark, such as for news reporting, criticism, commentary, and
parody.

The following sections go into greater detail to explain what
kinds of things can serve as a trademark, and what activities qualify
as trademark infringement and trademark dilution.

What Is A Trademark?

A "trademark" is an intellectual property right in a particular
"mark" used to used to identify the source or sponsor of a good or
service. (Don't be intimidated by the word "mark" -- it is just a
generic term for the various things that can qualify as a trademark,
which we are about to describe.) A number of things can serve as a
trademark (from Chilling Effects):

names (such as company names, product names);

domain names, if they label a product or service;

images;

symbols;

logos;

slogans or phrases;

colors;

product design; and

product packaging (known as "trade dress").

Other types of trademarks are possible -- the key element is that the word, phrase, symbol, or design element act as a source-identifier for goods or services. You can think of it as very similar, if not identical, to the concept of branding. A trademark right is limited.
It only applies to those goods or services actually identified with the
trademark. A valid trademark entitles the trademark owner to stop
others from selling similar goods or services using the trademark or
confusingly similar trademarks; it does not entitle a trademark owner
to completely lock up a word, phrase, or image and remove it from
society's common vocabulary.

Common examples of trademarks include the word "Kodak" for
cameras and the familiar Apple logo for computers, music-downloading
services, iPhones (another trademark), and iPods (yet another). Other
examples include the Nike "swoosh" for sneakers, the "golden arches"
for fast food, the Starbucks mermaid for coffee, and slogans like
"There are some things money can't buy -- for everything else there's
MasterCard" and "Priceless" for credit-card services. A good example of
trade dress is the the particular shape of a Coca-Cola glass soda
bottle. On the Internet, trademark protection may apply to domain
names, websites names, website logos, and the "total image" of a
website, among other things. Again, the essential ingredient for
trademark protection is that the name, phrase, symbol, or whatever
serve to identify the source of a good or service. Some common Internet
trademarks include the word "gmail" and domain "gmail.com" for email
services, the domain "nytimes.com" for online news, the name
"TechCrunch" for electronic publishing services, and the name "eBay"
and its familiar logo for online auction services. In addition, website
operators can protect the overall "look" of their websites as trade
dress, if they can establish that consumers uniquely associate that
"look" with their goods or services.

Not all words, phrases, symbols, and the like can serve as a
trademark, however. The primary requirement for a valid trademark is
that the mark be distinctive. For details on what kinds of words and phrases qualify as distinctive, see Naming Your Business: Choosing A Name Capable of Trademark Protection. Although the discussion focuses on names, the same points apply to other types of trademarks like symbols, words, and slogans.

For more information on registering and acquiring ownership of a trademark, please see the Trademark Ownership section.

Trademark Infringement and Dilution

Trademark law gives trademark owners the ability to bring a lawsuit for trademark infringement and trademark dilution.
These two distinct legal claims are discussed below. Trademark law also
creates a legal claim for cybersquatting, which is discussed separately
in the Cybersquatting section of this guide.

Trademark Infringement

An owner of a valid trademark
may sue an individual or company for trademark infringement when that
individual or company uses an identical or confusingly similar mark in
connection with goods or services. The Lanham Act contains two statutory provisions authorizing an infringement lawsuit. 15 U.S.C. § 1114 gives the owner of a registered trademark the right to sue for infringement of that trademark. 15 U.S.C. § 1125(a)
gives the owner of an unregistered trademark the right to sue for
infringement of that trademark. For details on how trademark ownership
arises via registration and otherwise, see Trademark Ownership.
A trademark owner that wins a trademark infringement lawsuit can
recover money damages and get an injunction barring the defendant from
continuing its infringement. A court may also force a losing defendant
to pay the trademark owner's attorneys' fees under "exceptional
circumstances" -- basically, when the court determines that the
defendant willfully or intentionally infringed the trademark.

The key to an infringement claim is a likelihood of confusion
between the defendant's use of a mark and the trademark owner's use of
its trademark. While different courts use slightly different standards
to make this comparison, the factors most commonly used to determine
the likelihood of confusion are as follows:

the strength of the plaintiff's mark;

the similarity of the plaintiff's and the defendant's goods or services;

the similarity of the trademark used by the plaintiff and the trademark used by the defendant;

the marketing channels used for their respective goods or services;

the degree of care likely exercised by the purchaser of their respective goods or services;

the defendant's intent in selecting the trademark;

the likelihood of expansion of their respective product or service lines; and

evidence of actual confusion.

The more similar the marks used, the more likely that consumers will
be confused. In addition, confusion tends to arise when the plaintiff's
and the defendant's goods or services are similar and they use similar
marketing channels. The rationale is that, if the parties' goods or
services are dissimilar, the ordinary consumer will not be confused
about whether the goods or services come from the same source. For
example, given the existence of Pepsi brand soda, someone selling soft
drinks under a slightly different brand name, such as "Pipsi" or
"Peps," would almost certainly lose a trademark infringement lawsuit.
On the other hand, a company selling pet grooming services under the
"Pipsi" or "Peps" brand name would be more likely to successfully
defend against an infringement suit because ordinary consumers would
probably not assume that Pepsi had moved into the pet grooming
business. Needless to say, this example is a simplification of what you
might see in a real case. The multi-factor test can result in complex
line drawing, and it is often difficult to tell whether a certain use
of a trademark will or will not infringe a trademark owner's rights.
This is one of the primary reasons why trademark lawsuits are expensive
to defend.

When it comes to online publishing, there are a few points to
remember. First, a plaintiff cannot win an infringement lawsuit without
proving that the defendant used a confusingly similar mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services.
If you operate a purely noncommercial website (i.e., you do not sell
any goods or services, and you don't host advertising or solicit
donations in connection with your services), then you may be able to
defeat a lawsuit without even getting to the likelihood of confusion
question. We discuss this issue and other possible defenses to an
infringement lawsuit in the Using the Trademarks of Others section.

Second, even if you do sell advertising or solicit donations,
you primarily need to worry only about trademarks used by businesses or
individuals doing work that is similar to yours. Before adopting a
trademark (whether a domain name, a title for your blog, a logo, or
whatever), you should look around at other websites doing work similar
to yours to see if they are using the same or similar trademark. When
you consider whether something is "work similar to yours," take a broad
view. This could be anything from a journalism site, a blog, some kind
of interactive web service, something tech-y with a heavy online
presence, etc. Keep in mind that there is little certainty in this
area, and you will just have to do your best in making the call. There
is one important caveat. As discussed below, owners of famous
trademarks can protect their trademarks with a dilution claim, even if
there is no likelihood of confusion. So you may want to avoid using famous trademarks altogether.

Third, if you use a trademark owner's trademark in the process
of criticizing, commenting, or reporting on the trademark owner, its
activities, or its goods or services, you will have a good argument
that no reasonable consumer would be confused into thinking that the
trademark owner is the source or sponsor of your work. Take news
reporting, it stretches credulity to imagine that consumers get
confused about source or sponsorship when the New York Times
reports on Wal-Mart's most recent earnings release or Ford's new hybrid
car. The lack of confusion should be even more clear when it comes to
criticism. For example, in Lamparello v. Falwell,
420 F.3d 309 (4th Cir. 2005), the United States Court of Appeals held
that there was no likelihood of confusion between a website criticizing
the religious and social views of Reverend Jerry Falwell and the
Reverend's own services, even when the website made use of the domain
name "www.fallwell.com." The court noted, in relevant part: "After even
a quick glance at the content of the website at www.fallwell.com, no
one seeking Reverend Falwell's guidance would be misled by the domain
name-www.fallwell.com-into believing Reverend Falwell authorized the
content of that website. No one would believe that Reverend Falwell
sponsored a site criticizing himself, his positions, and his
interpretations of the Bible."

Trademark Dilution

An owner
of a famous trademark may sue an individual or company for trademark
dilution when that company or individual uses its trademark in
connection with goods or services in a way that is likely to dilute it.
See 15 U.S.C. § 1125(c).
A trademark owner that wins a trademark dilution lawsuit can get an
injunction barring the defendant from continuing its dilution, and in
rare circumstances it can obtain money damages and attorneys' fees. To
make out its case, the trademark owner need not show that the
defendant's use of its trademark causes a likelihood of consumer
confusion. The parties to the lawsuit need not be in competition, and
the goods or services in question need not be similar. Importantly, the
trademark in question must be "famous," which means pretty much what it
sounds like. If an ordinary person would recognize a trademark as a
household name, then it probably qualifies as famous.

There are two distinct types of dilution, blurring and tarnishment.
Blurring refers to the loss of uniqueness of a trademark because of an
association with goods or services other than those of the trademark
owner. When Congress passed the statute, it indicated that the law
would apply to the sale or advertisement of goods like hypothetical
"Kodak Pianos," "Buick Aspirin," and "Dupont Shoes." Note that blurring
can occur even if no reasonable consumer would believe that Kodak had
started making pianos or that Buick had started making aspirin.
Blurring is an extremely expansive concept -- it could encompass almost
any unauthorized use of a famous trademark, so long as the defendant
used the mark to identify its own goods or services, rather than to
engage in commentary, criticism, news reporting, and like activities.
Tarnishment occurs when the defendant's use of the famous trademark
harms its image in the minds of consumes, such as by associating it
with immoral or scandalous goods or services. For example, the lingerie
seller Victoria's Secret sued a sex shop called "Victor's Little
Secret" for tarnishing its famous trademark.

Because of the potential breadth of trademark dilution,
Congress wanted to ensure that trademark owners could not use the law
to silence speech protected by the First Amendment. To this end,
Congress created specific exceptions to the dilution statute for the
following uses of a trademark:

any fair use of a famous mark in connection with comparative
advertising or parody, criticism, or commentary upon the famous mark
owner or the goods or services of the famous mark owner;

These exclusions provide a good deal of protection for citizen media
creators, but the courts have yet to provide exact or consistent
meanings for many of these terms, such as "fair use", "news reporting,"
and "noncommercial use." In the most favorable cases, courts have
determined that the dilution law does not apply to any speech that does more than propose a commercial transaction. See, e.g., Mattel Inc. v. MCA Records, 296 F.2d 894, 906-07 (9th Cir. 2002); Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 812 (9th Cir. 2003); Smith v. Wal-Mart Stores,
No. 1:06-cv-526-TCB, slip op., at 81-83 (N.D. Ga. Mar. 20, 2008). Under
this view, you could not be held liable for using a famous mark in
nearly all forms of criticism, commentary, parody, and news reporting.
But not all courts have embraced this view. We take up these issues and
other defenses to trademark infringement and dilution in the Using the Trademarks of Others section.

We are looking for contributing authors with expertise in media law, intellectual property, First Amendment, and other related fields to join us as guest bloggers. If you are interested, please contact us for more details.

Disclaimer

Information in this guide is based on general principles of law and is intended for information purposes only; we make no claim as to the comprehensiveness or accuracy of the information. It is not offered for the purpose of providing individualized legal advice. Use of this guide does not create an attorney-client or any other relationship between the user and the Digital Media Law Project or the Berkman Center for Internet & Society.

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